Notes on Design Vs. Utility Patents

by AVA
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A new concept established or an invention made has, potentially, future economic and commercial value. However, the developer of the concept (ie, the inventor) may not immediately be aware of the possible financial returns from the invention. Because conversion of an abstract invention into a commercialized product or service, it is therefore pertinent for an inventor to ensure that the ideas and rights related to the invention are protected for a definite period of time.

Article I, Section 8 of the US Constitution provides that, for promoting the progress of science, inventors are entitled to "exclusive" rights to their respective discoveries. The US Patent and Trademark Office ("USPTO") is the government entity charged with issuing patents in the United States.

A design patent protects various visual characteristics of an article of manufacture 'and covers the newly invented ornamental design. It protects the appearance of the invention and is comparatively cheaper and faster to get patented. A design patent does not directly protect the functional features of an invention. Thus, competitors can sometimes get by with changing the overall appearance of an otherwise patented-protected product. In contrast, a utility patent protects the functional aspects of an invention. A single utility patent can protect many different variations of products, so becoming more economic in the long run.

A situation may however arise, where the invention has a unique function or structure associated with a unique ornamental design. In such situation, adequate protection could be provided with a combination of both design and utility patents. After due consultation with a patent attorney, applications may be submitted both for patent and utility designs.

A design patent application mainly incorporates a specification and drawings incorporating the figures. The specification complements the preamble, descriptions of figures and single claim. The drawings contain the essence of what the design patent protects. Thus, drawings must be carefully drafted in accordance with the USPTO's Manual of Patent Examining Procedures ("MPEP"). Further, drawings must indicate those features which the patent is intended to protect, making drawings derived from 3D models – using software such as Pro-Engineer, Solid Works and CATIA – often useful.

A utility patent application, in contrast, will include an abstract, background of the invention, summary of the invention, drawings, brief descriptions thereof, a detailed description of the invention's preferred embodiment (s), and multiple claims.

Although substantive differences conceptually lie between design patents and utility patents, the prosecution of design and utility patent applications is similar, and both types of applications will face novelty and obviousness analysis at the USPTO. This makes obtaining patentability or infringement opinion before filing of application very prudent.

Infringement of either a design or utility patent occurs when one violates the exclusive rights afford to the patent's owner. Infringement of a design patent depends, generally, on whether the accused design and patented designs are substantially the same. Infringement of a utility patent depends, generally, on whether the patents claims literally "read on" the accused invention or whether the differences between the accused and patented products are insubstantial.

Whether an invention is patentable and if it is infringing are separate but related questions. An invention which runs afoul of an enforceable patent will not itself be patentable, though an invention can be unpatentable and also not run the risk of infringing another patent (eg, all of the patents which may cover have expired). In the event an inventor realizes his / her product is not likely patentable, it may be prudent to have an infringement declaration rendered to ensure no patent trolls are biding their time.

Any inventor or aspiring entrepreneur who is contemplating acquiring patent protection – or wondering if it is necessary – should speak with a patent attorney who can take the prophylactic steps necessary to ensure you are covered in either event.



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